DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. The Applicant’s amendment filed on November 17, 2025 was received. Claims 1 was amended. Support of amendment can be found in paragraphs [0077], [0084] of current Patent Application Publication US2023/0183521 A1.
The text of those sections of Title pre-AIA 35, U.S.C. code not included in this action can be found in the prior Office Action issued on November 15, 2024 and July 16, 2025.
Claim Rejections - 35 USC § 103
The claim rejections under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Huybrechts (EP 1454934 A1 with US 2004/0214942 A1 as English translation) on Claims 1-10 are maintained.
Regarding claim 1, Huybrechts teaches a polyacrylate polyols comprising for example 16.2 wt% of hydroxyalkyl(meth)acrylate monomers (e.g. hydroxypropyl methacrylate, 2-hydroxyethylmethacrylate) (a1), 12 wt% of vinyl monomers (e.g. styrene) (a3), and 13.8 wt% of cycloaliphatic (meth)acrylate monomers (e.g. isobornyl methacrylate) (a4), the acid value of 3.5 mg KOH/g and the Mn/Mw=1300/3000 Dalton, preferred a weight average molecular weight Mw from 2,000 to 20,000 Dalton, and a glass transition temperature Tg of 50 ºC for example ([0020], [0024] [0066] and [0067], in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) see MPEP 2144.05, wt% calculation example 3 in [0066]: a1: 648g of 2-hydroxyethylmethacrylate/ total weight of the composition (719.96+0.04+480+552 +360+648+360+80+266.8+40+480g) x 100%=16.2 wt%; a3: 480 grams styrene/ total weight of the composition (719.96+0.04+480+552+360+648 +360+80+266.8+40+480g) x 100%=12.0 wt%; a4: 552 grams isobornyl methacrylate/ (719.96+0.04+480+552+360 +648+360+80+266.8+40+480g) x 100%=13.8 wt%). Huybrechts does not explicitly teaches the whole range of a weight averaged molecular weight Mw of between 1,000 and 2,900 Dalton, but teaches preferred a weight average molecular weight Mw from 2,000 to 20,000 Dalton ([0023]). It would have been a prima facie obvious to have selected the overlapping portion of the range in between 2,000 and 2,900 Dalton, because the claimed range 1,000 and 2,900 Dalton overlap or lie inside ranges disclosed by the prior art 2,000 to 20,000 Dalton, a prima facie case of obviousness exists and expect the same success when applying the same averaged molecular weight. Huybrechts does not explicitly teach the glass transition temperature Tg of lower than 50 ºC. Huybrechts teaches the glass transition temperature Tg of 50 ºC, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP 2144.05).
Regarding claim 2, Huybrechts teaches wherein the polyacrylate polyol (Al) is 2-hydroxyethylmethacrylate for example ([0066]).
Regarding claim 3, Huybrechts teaches wherein the polyacrylate polyol (Al) is hydroxypropyl methacrylate for example ([0066]).
Regarding claim 4, Huybrechts teaches wherein the cycloaliphatic (meth)acrylate monomers (a4) is isobornyl methacrylate for example ([0066]).
Regarding claim 5, Huybrechts teaches wherein the polyacrylate polyol (A1) has a Mn of 1300 Dalton for example, a preferred a weight average molecular weight Mw from 2,000 to 20,000 Dalton, an acid value (AV) of 3.5 mg KOH/g, Tg of the copolymer backbone was 80°C, and 13.8 wt% of cycloaliphatic (meth)acrylate monomers (e.g. isobornyl methacrylate) (a4) ([0024], [0066], [0067], in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) see MPEP 2144.05).
Regarding claim 6, Huybrechts teaches wherein the cycloaliphatic (meth)acrylate monomers (e.g. isobornyl methacrylate) (a4) ([0028], [0066]).
Regarding claim 7, Huybrechts teaches wherein the polyacrylate polyol (A1) has a Mn of 1300 Dalton for example, a preferred a weight average molecular weight Mw from 2,000 to 20,000 Dalton, a polydispersity Mw/Mn= 1300/3000= 0.43, an acid value (AV) of 3.5 mg KOH/g, Tg of the copolymer backbone was 80°C, and 13.8 wt% of cycloaliphatic (meth)acrylate monomers (e.g. isobornyl methacrylate) (a4) ([0024], [0066], [0067], in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) see MPEP 2144.05).
Regarding claim 8, Huybrechts teaches wherein the hydroxyalkyl(meth)acrylate monomers (e.g. hydroxypropyl methacrylate, 2-hydroxyethylmethacrylate) (a1) and cycloaliphatic (meth)acrylate monomers (e.g. isobornyl methacrylate) (a4) for example ([0066], [0067]).
Regarding claim 9, Huybrechts teaches from 35 to 100 % by weight of polyacrylate polyol (A1) relative to the total weight of polyol component (A) ([0066], [0067], in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) see MPEP 2144.05).
Regarding claim 10, Huybrechts teaches from 35 to 100 % by weight of polyacrylate polyol (A1) and from 10 to 40 % by weight of solvent (A2) relative to the total weight of polyol component (A) (Abstract, [0066], [0067], in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) see MPEP 2144.05).
Response to Arguments
Applicant's arguments filed on November 17, 2025 have been fully considered but they are not persuasive.
Applicant’s principal arguments are
Huybrechts is directed to polyacrylate polyols that would not be suitable for high solids coatings, because there is no teaching or suggestion of VOC reduction in Huybrechts. Therefore, Huybrechts clearly failsto teach or suggest the presently claimed invention or how to achieve the objective thereof. Indeed, Huybrechts is incompatible with the objective of providing a (ultra) high solids (unpigmented) cross-linkable coating composition of the presently claimed invention.
Huybrechts does not teach a glass transition temperature Tg of lower than 50 ºC.
In response to Applicant’s arguments, please consider the following comments.
In response to Applicant’s arguments, the examiner respectfully disagrees. As an initial matter, the recited independent claims do not require high solids coatings, Therefore examiner believes Applicant is arguing some elements that are not in the scope of the recited independent claims.
In response to Applicant’s arguments, the examiner respectfully disagrees. Huybrechts teaches the glass transition temperature Tg of 50 ºC, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP 2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAI YAN ZHANG whose telephone number is (571)270-7181. The examiner can normally be reached on MTTHF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAH-WEI YUAN can be reached on 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HAI Y ZHANG/ Primary Examiner, Art Unit 1717